invista north america s.à.r.l. v. m&g usa corp., civ. no. 11-1007-slr-cjb (d. del. july 12,...

7/28/2019 INVISTA North America S.à.r.l. v. M&G USA Corp., Civ. No. 11-1007-SLR-CJB (D. Del. July 12, 2013).

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2. Motion for reconsideration. The court issued a memorandum opinion and

order dated June 25, 2013 that granted, in relevant part, lnvista's motion for summary

judgment of indirect infringement of asserted claims 1-3, 5, 8, 9, and 12 of the '216

patent. (D.I. 382, 383) The court found infringement by M&G customers when they

melt the accused PoliProtect APB and JB products (collectively, "the PoliProtect

products") and thereby mix the components together. (D. I. 382 at 19) The focus on

reconsideration is the court's finding that the "cobalt salt" limitation of the '216 patent

was met because cobalt neodecanoate is undeniably added during the manufacturing of

the PoliProtect products and M&G had submitted no evidence to raise a genuine issue

of material fact on summary judgment that it does not exist in the final PoliProtect

products. (/d. at 24-26)

3. The purpose of a motion for reconsideration is to "correct manifest errors of

law or fact or to present newly discovered evidence." Max's Seafood Cafe ex ref. Lou-

Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). Accordingly, a court may alter

or amend its judgment if the movant demonstrates at least one of the following: (1) a

change in the controlling law; (2) availability of new evidence not available when

summary judgment was granted; or (3) a need to correct a clear error of law or fact or to

prevent manifest injustice. See id. A motion for reconsideration is not properly

grounded on a request that a court rethink a decision already made. See Glendon

Energy Co. v. Borough of Glendon, 836 F. Supp. 1109, 1122 (E.D. Pa.1993). Motions

for reargument or reconsideration may not be used "as a means to argue new facts or

issues that inexcusably were not presented to the court in the matter previously

decided." Brambles USA, Inc. v. Blocker, 735 F. Supp. 1239, 1240 (D. Del. 1990).

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4. In its motion for reconsideration, filed July 3, 2013, M&G asserts that the court

made an error not of reasoning but of misapprehension of fact and law. (D.I. 405 at 1)

Specifically, M&G asserts that the court "misapprehended the facts supporting M&G's

position" because Dr. Robert B. Moore's deposition testimony does not disavow his

expert report. (/d. at 1, 6-8) It further asserts that the court improperly shifted the

burden on infringement to M&G by requiring it to show that no cobalt neodecanoate

exists in the PoliProtect products after complexing occurs. (/d. at 1, 5)

5. The court previously reviewed every citation to Dr. Moore's testimony that

M&G now relies upon in its motion for reconsideration, and concluded that no

reasonable juror could find that there is no cobalt salt in the accused PoliProtect

products. Dr. Moore's opinion in his expert report regarding the complexing of cobalt

neodecanoate was a general one which cited to a single lnvista document regarding

whether or not cobalt complexes. 1 (See D. I. 237 at PA166; see also id. at PA515

132:14-134:3) During his deposition, Dr. Moore admitted that he had no opinion as to

whether all of the cobalt salt complexes in the PoliProtect products. 2 (See id. at PA515

1Dr. Moore opined in his expert report that "[s]hortly after the cobalt salt is added,. . . the cobalt salt as added no longer exists." (D.I. 237 at PA166) He did not offer anyexplanation as to this conclusion but simply referred to a single lnvista document. Dr.

Moore testified during his deposition that the lnvista document upon which he reliedsupported his conclusion that cobalt salt complexes, not that it complexes completely.(/d. at PA515 133:17-23)

2M&G attempts to characterize portions of Dr. Moore's deposition testimony as areluctance to opine, as a matter of fact, that no cobalt neodecanoate exists in thePoliProtect products because he had not conducted any testing to determine theamount of complexing that takes place. (D.I. 405 at 2-4, 6) (citing D. I. 237 at PA515-16134:4-134:20, 135:24-137:4) However, M&G does not acknowledge the preceding lineof questioning to which Dr. Moore clearly responded, "I don't have an opinion about thecobalt- all of the cobalt salt being complexed." (See D.l. 237 at PA515 129:22-130:8)

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130:4-8) M&G's attempt to create an opinion from an expert who has provided sworn

testimony that he has no opinion on the relevant issue cannot sustain a motion for

reconsideration or create any credibility issues for a jury.

6. Moreover, the court did not improperly shift the burden of infringement onto

M&G. Throughout its analysis, the court did not waver from the principle that lnvista

carries the ultimate burden by a preponderance of the evidence. After lnvista had

shown a prima facie case for summary judgment, M&G bore the burden of production

"to present specific evidence indicating there is a genuine issue for trial." Air Turbine

Tech., Inc. v. Atlas Copco AB, 410 F.3d 701, 707-08 (Fed. Cir. 2005). Without any

evidence to support its argument that all of the cobalt neodecanoate complexes out of

the PoliProtect products, M&G failed to raise any genuine issue of material fact to

preclude summary judgment.3

7. The proffer. M&G now avers that it should be permitted to offer testimony

concerning Dr. Rollick's testing related to cobalt salt complexing. On February 10,

2012, M&G identified Dr. Rollick as a witness in its Rule 26 disclosures, and on March

27, 2013, it identified Dr. Rollick as a fact witness for trial. lnvista deposed Dr. Rollick

on May 29, 2013. There is no dispute that Dr. Rollick cannot testify at trial as an expert

witness because he prepared no expert report, but M&G contends that he should be

3M&G's request for expedited briefing is denied as moot. lnvista's request forattorney fees in connection with the motion for reconsideration (D.I. 415 at 10 n.9) is

denied.4



permitted to testify as a fact witness. 4 In this regard, and at the court's request, M&G

submitted the proffer. (D. I. 403)

8. According to the proffer, Dr. Rollick was employed by M&G and its

predecessors and, from 1992 to 2010, worked on polyester resins for packaging

applications. (/d. at ,-r 2) He was allegedly asked by his manager in 2008 to investigate

the cause of an intense blue color observed when cobalt neodecanoate was added

during the manufacturing process of the PoliProtect products. (/d. at ,-r 3) From

investigations he conducted in 2008 and 2009 ("the 2008-09 experiments"), he

determined that the color was attributable to the addition of lithium acetate, which

converted cobalt neodecanoate to a new species, cobalt tetracarboxylate. (/d. at ,-r 4)

9. Dr. Rollick retired in November 2010, but was subsequently hired by M&G's

patent prosecution counsel as a consultant to conduct testing in support of a pending

patent application, Application No. 13,677,345 ("the '345 application"), on which he is

listed as a co-inventor. (/d. at ,-r 7) Between December 2012 and May 2013, Dr. Rollick

conducted additional experimentation ("the 2012-13 experiments"); M&G asserts that

the 2012-13 experiments were aimed at merely reproducing the 2008-09 experiments.

(/d. atW 8-1 0) Dr. Rollick submitted data from the 2012-13 experiments, along with his

opinions drawn from that data, as declarations to the United States Patent and

Trademark Office ("PTO") between late 2012 and 2013. (/d. at ,-r 11)

10. Opinions based on "scientific, technical, or other specialized knowledge that

will help the trier of fact to understand the evidence or to determine a fact in issue" are

4The court notes for the record that fact discovery closed on October 5, 2012,and expert discovery closed on February 20, 2013. (D.I. 18; D.l. 144)

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trial on a wholly different issue- the extent to which cobalt neodecanoate complexes-

which has emerged during litigation as important to its noninfringement defense. Dr.

Rollick's interpretation of data from the 2008-09 experiments, drawn in view of litigation

and requiring scientific or technical expertise, cannot constitute fact testimony or lay

witness opinions.

12. Dr. Rollick subsequently submitted declarations to the PTO presenting data

from the 2012-13 experiments and opining on the extent to which cobalt neodecanoate

complexes. For example, in a declaration to the PTO dated November 15,2012, he

submitted various spectroscopy graphs and opined: "It is my belief that because the

intensity stopped increasing after increasing 185 units, all cobalt was tetrahedrally-

coordinated, that is, in cobaltate form . . . . It is my opinion that all the cobalt in the tested

PoliProtect sample . . . is in a cobaltate form."6 (D. I. 406, ex. Gat MG00525590,

MG00525600) As Dr. Rollick conceded in his deposition, his opinions in this regard

were based on spectroscopy studies that he conducted in the 2012-13 experiments but

which he did not conduct in the 2008-09 experiments. (See Dr. Rollick deposition at

75:2-76:17) The data from the 2012-13 experiments, as with the 2008-09 experiments,

do not include self-evident facts regarding the extent to which cobalt neodecanoate

6Dr. Rollick submitted another declaration to the PTO on June 13, 2013, whichwas produced to lnvista on June 18, 2013, after lnvista had deposed Dr. Rollick. (D. I.

403, ex. I)

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complexes. 7 (/d. at 33:25-34:4) Any opinions to be drawn would require an expert to

explain, interpret, and opine on the data using his scientific or technical knowledge.

13. M&G suggests that, because Dr. Rollick was hired by M&G's patent

prosecution counsel rather than its litigation counsel and because his opinions were

submitted in connection with the '345 application, he should be able to present those

opinions he submitted to the PTO as fact testimony in this trial. (D. I. 403 at 6) Dr.

Rollick's conclusions drawn from the 2012-13 experiments, however, are expert

opinions, made as a paid consultant contemporaneously with this litigation. They are

not within the purview of a fact witness and, most significantly, Dr. Rollick's testimony

(whether fact or expert) regarding the extent to which cobalt neodecanoate complexes

was never vetted during discovery and, submitted on the eve of trial, is untimely.

14. To the extent M&G seeks to rely on Dr. Rollick's testing and testimony to

support its motion for reconsideration, a motion for reconsideration "may not be used by

the losing litigant as a vehicle to supplement or enlarge the record provided to the

[c]ourt and upon which the merits of the decision was made unless new factual matters

not previously obtainable have been discovered since the issue was submitted to the

[c]ourt." Schering Corp. v. Amgen, Inc., 25 F. Supp. 2d 293, 295 (D. Del. 1998). M&G

admits that Dr. Rollick's testimony is "new evidence" that was not presented to the court

during summary judgment briefing. (D.I. 405 at 10) Nevertheless, it asserts that a

manifest injustice exception applies to warrant the court's consideration of the new

7 lndeed, Dr. Rollick admitted during his deposition that his role in prosecuting thepatent included "the interpretation of the results." (Dr. Rollick's deposition at 33:25-

34:4)

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evidence. (/d.) (citing Sabatini v. Its Amore Corp., 455 F. App'x 251, 254-55 (3d Cir.

2011 )). The new evidence that M&G seeks to introduce was available to it before the

summary judgment stage. In light of M&G's own delay and the court's finding that Dr.

Rollick's testimony, in relevant part, is not proper for a fact witness, manifest injustice

will inure to lnvista if this testimony were permitted, not the reverse.

15. Conclusion. For the foregoing reasons, the court denies M&G's motion for

reconsideration and rejects the proffer.

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invista north america s.à.r.l. v. m&g usa corp., civ. no. 11-1007-slr-cjb (d. del. july 12,...

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